PENDING ISSUES REGARDING CORRECTIONS TO BE MADE AGAINST
INVALIDATION-PART III

Wei-Ting Chou, Patent
Director, Patent Group I

¡½Master
of Agricultural Engineering, National Taiwan University

¡½Bachelor
of Medical Engineering, National Cheng Kung University

¡@

4.2 Scheme (B) that
there is no room for acceptance:

Introduction:
any correction petition submitted during the administrative
remedy against an invalidation will not be accepted.

Reasons for no
acceptance

In the system
where a claim can be separately invalidated and thus a separate
decision can be made as introduced in the new Patent Law, there
may be a decision that partial claims are invalidated and
partial claims are not invalidated. Furthermore, a
corresponding administrative appeal can be filed against either
of the partial two decisions, and thus the subsequent
prosecution during the administrative remedy will be
complicated. Therefore, in order for the stability of the
claims prosecuted during the administrative remedy, it is
necessary to, with reference to the related foreign legislation
(e.g. in Japan, or Korea), stipulate that the correction
petition submitted during the administrative remedy against the
invalidation cannot be accepted, so as to maintain the stability
of the legal system.

Advantages and
disadvantages

Advantages:

1. The
complications in the subsequent prosecution during the
administrative remedy can be avoided.

2. The stability
of the claims prosecuted during the administrative remedy can be
maintained.

Disadvantages:

1. If the
patentee can benefit from the correction petitioned during the
subsequent invalidation or for the civil infringement action,
the benefit might be damaged because the current invalidation
case is subject to the administrative remedy.

2. According to
the present Examination Guidelines and litigation practices: if
the invalidation is decided, the correction petition to be
submitted during the administrative remedy against the
invalidation will not be accepted because the correction might
influence the basis on which the decision is made, but there is
an exception that the correction petition submitted during the
administrative remedy against the decision that the invalidation
is dismissed will still be accepted. Therefore, if it is
stipulated that the correction petition during the
administrative remedy against either of the two partial
decisions above cannot be accepted, this will reflect more
strictness than the current practices.

Practicability

1. This scheme
that the correction petition to be submitted during the
administrative remedy against the invalidation case cannot be
accepted requires consent from and the support of the public.

2. The
subsequent invalidation case should be examined according to the
original publication text.